The AIA did not Change Long-Standing Precedent Governing the On-Sale Bar

January 23, 2018

The AIA did not Change Long-Standing Precedent Governing the On-Sale Bar

In June 2017, a panel of the U.S. Court of Appeals for the Federal Circuit (CACF) interpreted for the first time the new prior art provision (35 USC 102(a)(1)) of the American Invents Act (AIA). See an earlier publication on Helsinn Healthcare v. Teva Pharmaceuticals here. The panel of three judges held that an invention could be "on sale," and thus barred from patentability, even if the details of the claimed invention were not made available to the public via the sale or offer for sale. This holding came as a surprise to many commentators who believed that the new language in Article 102(a)(1) “or otherwise available to the public” modified the preceding phrase “on sale.” The CAFC was recently asked to rehear and reconsider the case. The Court denied the request, and in a concurring opinion dated January 16, 2018 Circuit Judge O’Malley (on the original panel) explicitly confirmed his view “that the AIA did not change long-standing precedent governing the on-sale bar.” Thus, when companies offer for sale their technology (even under a confidential agreement) anywhere in the World, they should be aware that such offers could trigger a bar against the patentability of the technology even when the offers do not make the claimed invention available to the public. The patent owner will likely appeal the decision to the U.S. Supreme Court.